Meta

PTAB: The 2011 America Invents Act (AIA) significantly changed many aspects of patent law. One change was to try to improve patent quality by allowing potentially invalid patents to be challenged in new types of post-grant opposition procedures.

The Europeans have had a patent opposition process for years, and having observed it in operation at first hand, I am unimpressed. The European system lacks legal protections that Americans take for granted (e.g. rules of evidence, protections against unfair surprise). It is also possible to game the European system by requesting that the opposition be done in a language that (conveniently) the original European examiner or other parties may not speak. Another problem is that the European opposition review panels operate by making instant verbal “shoot from the hip” decisions, and only “justify” the decisions in writing months later.

The USPTO Patent Trial and Appeal Board (PTAB) has been working to implement an American version of the opposition process. They have been hosting roundtables to show their progress to date and solicit feedback. I attended their April 29, 2014 roundtable at Santa Clara University, and came away favorably impressed.

In my opinion, the real challenge in doing decent post-grant opposition procedures is the delicate balance between trying to bring in more of the legal protections of common law/Federal law rules of evidence and civil procedure (thus improving on the European system), while minimizing the burdens of a conventional trial process. Here, in addition to the obvious high costs and long times associated with conventional trials; there is also an issue of legal expertise.

Conventional patent trials are so complex that typically they are handled by expert litigation attorneys. These litigation attorneys have a detailed knowledge of the trial process, but sometimes less knowledge of patent law and the underlying technology. By contrast, patents are usually prosecuted by patent attorneys who may have very detailed knowledge of patent law and the underlying technology at issue, but often less trial process expertise.

PTAB appears to be attempting to devise a streamlined review system that retains a number of common law/Federal trial conventions and legal protections, without being overly burdensome. In my opinion, their approach does improve on the due process of law deficiencies I noticed in European oppositions. Relative to standard trials, the PTAB approach appears to be relatively simple, and you don’t need to be a litigation expert.

I am hopeful that with some review of the rules of evidence, civil procedure, and of course PTAB procedures, patent attorneys (often most knowledgeable about the patent and related technology) should be able to come up to speed with the new PTAB reviews fairly quickly.

35 USC 103 “obviousness” rejections: The recent Federal Circuit case of Leo Pharmaceutical Products, Ltd. v. Rea, 2013 WL 4054937 suggests that the Federal Circuit may be starting to develop a new set of criteria and arguments that can help protect against hindsight bias in obviousness rejections. In Leo, the Federal Circuit held that “to avoid the trap of hindsight”, probative evidence of nonobviousness should also be considered. What was new was that the Leo court held that this can include both evidence of long felt but unsolved needs, and the length of time between the publication dates of the prior art (used in the obviousness rejection) and the claimed invention. Specifically Leo court held that the existence of a large time gap between the prior art publications, and the invention, can also be used as indicia of non-obviousness.

How long must this time gap be? The Leo court held that given a longstanding need, if the prior art citations used in the obviousness rejection are on the order of about 14-22 years old, then this is too long. That is, such an extensive time delay is probative for non-obviousness because if the combination of such long known citations was actually obvious, then the combination would have been disclosed sooner.

An interesting consequence of this ruling is a novel (but risky) “shoot the moon” type of patent prosecution strategy for obviousness rejections. That is, Leo can be interpreted as a Federal Court suggestion to find out how far back in time the relevant citations actually extend. For example, if the prior art is actually 30 years old, but the citations used to demonstrate the prior art were only 5 years old, the following could be done:

Explore the roots of the 5 year old prior art citation

Trace back to the original 30 year old prior art

Disclose the 30 year old prior art citations

Make a Leo type argument

The logic seems sound – something known 30 years ago was also known 5 years ago. The fact that the citations were not combined until the invention, despite a long-felt need, is probative that that the combination was not obvious.

This is arguably a “shoot the moon” legal strategy (i.e. a long shot). So remember that as always, this is not legal advice, and Kids, don’t try this at home!

35 USC 103 rejections: Ever have something rejected as “obvious” in view of a combination of 5+ references? The re Gorman case is how such absurd rejections are rationalized.

According to MPEP 707 section 7.37.07, arguments that the examiner used an excessive number of citations are presently found to be “unpersuasive”. Section 7.37.07 is based upon an old case In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). However Gorman uses reasoning that is now obsolete and unsupported due to patent law developments since 1991.

Some key aspects of the re Gorman decision were:

“When it is necessary to select elements of various teachings in order to form the claimed invention, we ascertain whether there is any suggestion or motivation in the prior art to make the selection made by the applicant. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.Cir.1985). ” ‘Obviousness can not be established by combining the teachings of the prior art to produce the claimed invention,absent some teaching, suggestion or incentive supporting the combination.’ ” In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed.Cir.1990) (quoting Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.Cir.1986)).

The extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of the prior art and its relationship to the applicant’s invention. As in all determinations under 35 U.S.C. Sec. 103, the decisionmaker must bring judgment to bear. It is impermissible, however, simply to engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps. Interconnect Planning, 774 F.2d at 1143, 227 USPQ at 551. The references themselves must provide some teaching whereby the applicant’s combination would have been obvious”

However since 2007 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, the “teaching, suggestion or incentive” requirement for combining citations is no longer required (although still allowed). When this part of the 1991 Gorman court’s reasoning, shown in the first paragraph above, is removed, it becomes clear that the legal and logical underpinning of their 1991 decision no longer apply!

However under present rules, MPEP 707 section 7.37.07, based upon the now obsolete 1991 Gorman legal reasoning, still acts as a roadblock for any applicant who attempts to argue that the examiner did: “engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps.”

Given that the Gorman court’s assumptions no longer hold, isn’t it time to revisit this case? At present, there is no upper limit to the number of citations that an examiner can apply, and indeed I personally have seen combinations of eight citations used in obviousness rejections.

What is patentable? Perhaps I was too optimistic in my earlier “Prometheus bound (or at least distinguished)” post.

The May 10 Federal Circuit court decision, “CLS Bank v. Alice Corporation” shows that the Federal Circuit is unfortunately still spinning its wheels with regards to determining basic questions about what is patent eligible.

The good news is that the decision’s various logical problems, and the logical problems with the underlying Supreme Court decisions, are being widely publicized. Indeed interest in this decision was so high that the Federal Circuit Court servers crashed under the load of everyone trying to download the decision at once!

If you are interested in seeing the present state of the art in regards to cutting-edge legal confusion, you can download the Federal Circuit decision at:

Mayo v Prometheus: In an ancient Greek myth, the Titan god Prometheus is chained to a mountain by the god of blacksmiths (Hephaestus/Vulcan). Why talk about ancient Greek myths? Because the story suggests a way out of the recent (2012) unfortunate “Mayo Collaborative Services vs. Prometheus Laboratories, Inc.” holding.

This case involved two medical diagnostics patents (6,355,623 and 6,680,302), in which SCOTUS held that patents that incorporate “laws of nature” may not be patent eligible “unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations“.

Are there any inventions that don’t operate according to natural law? What else is a patent claim but a drafting effort designed to monopolize a particular invention? What exactly are “additional features” and “practical assurance”? Here the Prometheus decision provides little or no guidance.

The decision’s use of “natural law”, as well as gratuitous citation of various examples from physics as well as medicine, is unfortunate for us scientifically trained types. This is because the three dimensional nature of the universe, the forward direction of time, and everything else about the world are all based on laws of nature!

Thus unless read narrowly, this decision would produce an unconstitutional result (it would eliminate all patents, hence violating Article 1 section 8 of the constitution). So the ruling must be read narrowly, because the SCOTUS upholds the constitution and is never wrong, right?

This will eventually get sorted out. The Federal Circuit (Hephaestus/Vulcan), composed of judges who actually know something about laws of nature and patents, will step in. Their job is to clean up problems like this. Eventually they will likely “chain” the overly expansive Prometheus holding by various subsequent lower court holdings. They can’t totally overturn Prometheus, but they can certainly bring some sense to it by nibbling away at the interpretation. (Note added 4-10-16 — or maybe not, they are certainly taking their time!)

As one idea, the European Patent office (EPO) makes certain classes of medical methods that are practiced on the human body unpatentable. Perhaps the Federal Circuit might draw on the EPO for inspiration, and produce rulings that narrow the scope of the Prometheus “natural law” holding to something more akin to present EPO practice. This would still not be totally great for Biotech, but Biotech manages to survive in Europe nonetheless.

In the meantime, damage control is also underway at the USPTO. Their July 3, 2012 guidelines state the USPTO’s expectation that Prometheus considerations will primarily impact patents that being examined by Technology Center 1600 – Organic chemistry, drug delivery, molecular biology, biotechnology, and the like. Perhaps they have been reading the EPO rules as well. They further advise that examiners fully examine all applications, and reject on more than just patent eligibility issues. This at least gives the applicant a chance to amend patent claims to try to overcome occasional random Prometheus rejections.

Low cost PCT applications? Individual inventors and small firms on a budget may be happy to know that as of January 10, 2013, Rospatent offers a new way of filing international PCT patent applications that can save on PCT filing costs.

By treaty, all PCT patent applications must undergo international preliminary examination by an International Searching Authority (ISA). These preliminary examinations, however, are only advisory in nature, and the resulting international search reports (ISR) generally recommend rejection of almost all patent applications anyway. Unfortunately, ISA fees are a mandatory part of the initial PCT filing payment.

The USPTO is a recognized ISA, and charges $2080 for this service. Other ISA that the USPTO cooperates with have included Europe (even more expensive), Australia (also a bit more expensive), and Korea (cheaper – only $1167). As of January 10, 2013, the USPTO will also cooperate with the Russian patent office (Rospatent) as an ISA. Rospatent’s ISA fees are a jaw dropping $217. That’s right, this is not a typo. They are about 10 times cheaper than the US! Rospatent does accept English, and also corresponds in English.

What is the catch? Rospatent is new to this, and the quality of their searches is uncertain. Additionally, the USPTO information sheet on Rospatent states that Rospatent sends correspondence to applicants via snail mail, rather than electronically, although they do accept faxes.

Probably the biggest potential issue relates to the later national stage patent application filings. There appears to be a higher risk that Rospatent will use non-English (e.g. Russian) citations in their search report. Thus the applicant may in essence be trading off present lower initial PCT filing costs vs. the possibility of future higher national phase citation translation costs. The same issues apply to using Korea and Europe as an ISA, of course.

However, for small entity applicants, who are uncertain about future national phase filings, but who wish to preserve their international options as long and as inexpensively as possible, Rospatent appears to be a viable alternative to consider. Rospatent essentially cuts initial PCT application costs in half. For some small entities, where the financial decision may be to use Rospatent or do no PCT fling at all, Rospatent may be quite useful.

Note: Alas, crazy Ivan’s house of bargains is no more. As of 2014, Rospatent raised their prices. At the same time, the USPTO significantly dropped their PCT filing prices for small companies and individual inventors. Thus for many US based filers, the USPTO is now quite competitive on pricing, and there is no compelling need to use Rospatent.

In a rush to get your patent? Based on an analysis of statistics, the website patentlyo.com reports that the Track 1 prioritized examination method is far and away the best way to go. Track 1 vastly outperforms other speed-up methods (Accelerated Exam, Patent Prosecution Highway, and Petition to Make Special). In fact, most of the Track 1 prioritized patent applications are through the process in less than a year.

Track 1 is easy to do, if expensive. There is no requirement to do extra patent searching, and no requirement to work with foreign patent offices. If you are an independent inventor or your company is under 500 people in size, it is simply a matter of electing Track 1 at the time of initial filing, and in addition to the regular patent application fees, paying an additional $2830 in Track 1 exam fees, processing fees, and publication fees. It is also possible to elect Track 1 for an RCE filing as well.

The main other requirements are that the patent application have less than 4 independent claims and no more than 30 claims, which is not generally a problem for most purposes. There are a few other rules as well – a complete application must be submitted at the time of filing, and no extensions of time on replies are allowed. All in all, however, if you are in a rush and are willing to pay extra, it is a good option to consider.

Mark your calendars for March 15, 2013, because on March 16, 2013, the US patent office switches to the new AIA “first-to-file” system. In fact, mark your calendars for March 14, 2013, because it is quite possible that the USPTO servers may crash on March 15 under the weight of a huge number of last minute electronic patent filings.

The US patent system has traditionally been friendly to individual inventors and smaller startups. The old system gave inventors some time to work to improve their original concepts before filing. Inventors were protected because the old system allowed them to prove (using lab notebooks and the like) that they had thought of the invention some time before their patent filing date. This proof was called “swearing back”.

The rest of the world, by contrast, has been on a stricter “race to the patent office” aka “first-to-file” standard. Under “first-to-file”, the inventor with the earliest patent office time stamp wins, end of discussion.

Congresses’ 2011 America Invents Act (AIA) changes the US from the old standard to a US version of “first-to-file”. There are some tricky aspects to this new standard. It is possible (with evidence, and only for a limited time) to file a USPTO “derivation proceeding” to challenge a non-inventor (i.e. alleged thief) who filed first. Inventors are also given up to 12 months after publication or sale of their invention to file, without having their own publication or sale used against them, BUT…

If an inventor publishes or otherwise discloses their idea, someone else hears about the idea, makes a few changes and files first, under the new rules this could legally knock out the inventor’s rights to these improvements. Since, in the real world, inventions often come into focus gradually over time as a series of small improvements, you can see the problem. To add to the fun, the courts haven’t even seen new rule cases like this yet, and it will take years for them to sort things out.

The moral is, under the new rules, if you want decent patent protection for your work, consider filing on initial concept, and filing again on significant improvements. Resist the temptation to share your still forming ideas with the world. The old days of protection by “swearing behind” are gone as of March 15, 2013. What was OK to do last year is not OK to do this year.

European software patent laws are different from the US software patent laws. In the United States, at least before “Alice” all that you had to do to overcome a “not patentable” (35 USC 101) rejection for a software patent application was to include, in the claim language, words to the effect that the invention is running on a computer processor. The actual rules and court decisions are more complex, of course, but the fact remains that including the claim limitation “processor” used to go a long way.

What about Europe? Although European Patent Convention Article 52 states that “programs for computers” are not patentable, this does not mean that an invention that uses software is not patentable. Here European Patent Office (EPO) case law shows that what the EPO looks for is proof that the invention has a “technical effect” and/or has a “technical character”. If you can show that your invention solves a technical problem, then the fact that your invention uses software does not exclude it from EPO patentability.

Of course, just as in the US, the invention will still have to satisfy a number of other stringent tests (e.g. novelty, non-obviousness) as well, but at least in Europe the “technical effect” standard gets you in the door.

Since most software based inventions have a “technical effect”, for most software applications, the “we don’t do software” hurdle will thus be relatively easy to overcome. Perhaps just as “processor” used to be the magic word for US software patent applications, “producing the technical effect of” may be the magic words for European software patent applications.

Good news for US inventors who are interested in filing international design patents.

Design patents are for unique designs for something that otherwise functions according to prior art. In the US, inventions that function differently from prior art are covered by “utility patents”, while the unique ornamental appearance of a design is covered by a “design patent”. Design patents are relatively easy to get, and presently last 14 years.

Although the Patent Cooperation Treaty (PCT) has provided utility patent inventors and owners with a simple (if expensive) way to begin to file their utility patents in various countries, the PCT system does not provide a mechanism by which an American design patent can be filed internationally. This was a nuisance, because design patent standards can differ substantially from country to country, which made the process of obtaining international design patents (industrial design applications) complex and expensive.

Fortunately this is about to change. On December 19, the Hague Agreement Concerning the International Registration of Industrial Designs was signed into law in the US. The Hague Agreement can be viewed as a “PCT-like application” for design patents.

In addition to providing a standardized procedure for international filings, the Hague Agreement also extends the life of design patents to 15 years.

This agreement has actually been in the works for some time. The original Hague Agreement was established in Geneva in 1999, and was ratified by the Senate in 2007!